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Trademark Registration: The “Use in Commerce” Requirement for Internet-Based Companies

For all marks sought to be federally registered in the United States, the requirement that the mark first be “used in commerce” must be satisfied, as registered trademarks must designate the origin and source of a product. At least one qualifying “specimen” of the mark being used in commerce must be submitted in each trademark application. Typically, submitting a picture of a mark attached to a good, a picture of a product with the mark in a trade catalog, or a picture of the mark on a trade show sign will suffice. This is requirement is relatively easy to satisfy in goods-based industries, and slightly more difficult for service-based industries which offer most or all of their services on the Internet.

While screenshots of a trademark applicant’s webpage can be a satisfactory specimen to satisfy the “use in commerce” requirement, a slightly different and more specific set of rules applies when the goods or services are offered exclusively on the internet.

Goods-Based Companies Existing Exclusively on the Internet

For a goods-based company on the internet, the USPTO follows case precedent on this issue, which consists of three factors to determine the eligibility of a screenshot as a specimen showing “use in commerce”:

The webpage must include a picture of the goods

The mark seeking registration must be shown sufficiently near the picture of the goods so that the website viewer is likely to associate the mark with those goods

The webpage contains the information needed by a website viewer to purchase and order the goods.

I would also stress that the mark should prominently displayed in the screen, as well as in all the pages of your website. If your mark is buried amongst a sea of text on your webpage and in your screenshot, it will not be seen as a sufficient use.

If your application for a trademark will submit a screenshot of your webpage as a specimen, and that screenshot satisfies the above three requirements, then it should satisfactorily demonstrate “use in commerce” to the USPTO Examining Attorney on your case.

Service-Based Companies Existing Exclusively on the Internet

Service-based companies possess a unique twist on the issue of proving “use in commerce” in a trademark application. This is because there is no part of the service upon which one could attach the mark. For specimens used to show “use in commerce” of service marks in general, it is only necessary to show the mark actually used in the advertising of the services, with an emphasis on an association between the mark and the services. A screenshot which shows only the mark, without a reference to the relevant services, would not demonstrate sufficient usage of the mark.

Consider adding a tagline to your mark, briefly explaining the services associated with the mark. For example, I am currently rebranding my law practice under the mark SOMA, with a tagline beneath stating “Trademark and Branding Law for the Internet Era”. If placed several mentions of the mark SOMA all over my webpage, and thus all over my screenshot specimen, it may not be obvious to a website visitor what it is that SOMA as a company provides. If this is unclear, than there is insufficient usage of the mark in commerce.

Examples of Specimens Failing to Demonstrate Sufficient “Use in Commerce” for Services

A professional Christmas tree decorator/designer company submitting a specimen of a picture showing tags with their mark fixed to Christmas trees (mark makes no explicit reference to services)

A custom parts manufacturer submitting a specimen of a picture showing labels fixed to packaging of custom manufactured parts (insufficient to show “custom manufacturing” as the service connected to the mark)

An anti-drunk-driving organization submitting a specimen of a bumper sticker containing only the mark (the mark itself was insufficient to demonstrate what service was being provided)